Countering And Winning Patent Application Arguments

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Patent examination is one of the key steps in the patent prosecution process. It is during this stage that the patent claims undergo scrutiny by the appointed examiner. The grant or denial of a patent largely depends on this examination procedure. The United States Patents and Trademarks Office (USPTO) has devised a coherent system to judge the patentability of an invention set forth in Title 35 of the United States Code. In this article, we take a brief overview of the patent examination process and understand the strategy to win patent application arguments.

Table of Contents

Patent Examination Process  

Once a patent application is submitted to the USPTO, its contents are scrutinized at various stages. The preliminary checks focus on the completion and accuracy of the application. The next step involves a thorough study by the examiner to understand the specifications, determine the scope of claims, and check for prior art.  

If, during this process, the examiner finds the application to be inadequate in some manner, they issue an office action. This office action contains patent application arguments or conditions that according to the examiner render the application ineligible under Title 35. 

The basis of rejection could be: 

  • Patent Ineligible Subject Matter (35 U.S.C. 101)
  • Ambiguity/Inadequacy of Specification or Claim Requirement (35 U.S.C. 112) 
  • Prior Art Rejections (35 U.S.C. 102) 
  • Obvious subject matter (35 U.S.C. 103)

The office action sent out by the examiner will consist of a detailed reason explaining why the application is not entitled to a patent in its current form. The onus to counter the argument and submit proof is now on the applicant.  

Handling a Patent Subject Matter Eligibility Argument

35 U.S.C. 101 is a subject matter eligibility test for an invention. This can be a complicated rejection since it finds the claim set to be problematic. To make the outcome consistent, the USPTO has issued a two-prong test, as well as additional guidelines that focus on the ideas of eligible patent matter and patent-ineligible matter. Despite this clarification, the differences in claims interpretation by the examiner and patentee continue to occur.  

The approaches patentees can follow for these arguments range from citing traditional laws and amending claims to counter prior art rejection. But these conventional approaches may or may not work in all cases. A further rejection only burdens the applicant and causes delays. The foolproof method is to be aware of the latest legal developments and make substantial changes to the claim in adherence to the current USPTO guidelines.

Handling An Ambiguity Argument 

If the claims or specifications are found to be unclear and ambiguous, it is a cause for rejection. It is also cited for rejecting claimed features not disclosed in the specification. The approach to counter this argument is to make amends to the claim without introducing any new matter. These can be addressed in the following ways: 

  • If the rejected features are trivial, then the easiest way is to remove them from the application and resubmit it.  
  • If the features are mentioned in the specification, the drawings can be amended to include a graphical representation. This should be submitted with proof that no new matter has been added and the representation was already written in the specification. 
  • If the examiner has requested clarification in the claim language, then the applicant must make changes in the written language of the claim to offer more clarity.  

Sec 112 rejections are comparatively easier to deal with since they deal with the structure rather than the substance of the claim.

Handling a Prior Art Argument  

35 U.S.C. 102 deals with rejections based on the existence of prior art which discloses the claim’s limitations and was available before the patent application was filed. These rejections can be dealt with in the following ways: 

  • Proving that the prior art is invalid. Although examiners conduct thorough prior art searches and seldom confuse the dates, it is best to compare the date of the cited reference with your invention for any errors.  
  • By showing that the claim contains at least one unique feature not mentioned in the prior art. Such a feature can also be added by amending the claim. 

Handling an Obviousness Argument  

35 U.S.C. 103 deals with a combination of the obviousness of an invention and prior art. It reads as follows- “A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.’’  

One can argue a 35 U.S.C. 103 rejection on the following grounds: 

  • The claims can be amended to clarify the content or add a new feature or element. This should be done if a combination of prior art does reveal all elements of a certain claim.  
  • Invalidating the prior art. 
  • Proving success in the market can be evidence for non-obviousness. It is only due to its novelty that a product achieves commercial success and if it was very obvious, then someone would have thought of it before.  
  • If the problem is with the independent claims, then assess the dependent claims to see if there is an element of non-obviousness that can be used to convince the examiner.  


Patent arguments are quite a common occurrence during the prosecution process. A well-drafted claim will usually only face some structural amendments to get through. When drafting a patent argument keep in mind that the examiner is a subject expert and not a lawyer. They examine the application based on technological rather than legal aspects. Therefore, filling the argument with legal jargon will not help your case. Instead, find ways to rectify the claims and specifications when crafting your arguments to achieve a more successful outcome.

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